BEENVERIFIED, INC. v. Fundacion Private Whois / Domain Administrator
Claim Number: FA1304001496599
Complainant is BEENVERIFIED, INC. (“Complainant”), represented by Gene S. Winter of St. Onge Steward Johnston & Reens LLC, Connecticut, USA. Respondent is Fundacion Private Whois / Domain Administrator (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <been--verified.com> and <been-verified.net>, registered with INTERNET.BS CORP.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 25, 2013; the National Arbitration Forum received payment on April 25, 2013.
On April 26, 2013, INTERNET.BS CORP. confirmed by e-mail to the National Arbitration Forum that the <been--verified.com> and <been-verified.net> domain names are registered with INTERNET.BS CORP. and that Respondent is the current registrant of the names. INTERNET.BS CORP. has verified that Respondent is bound by the INTERNET.BS CORP. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On April 29, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 20, 2013 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@been--verified.com and postmaster@been-verified.net. Also on April 29, 2013, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 5, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
i. Respondent is neither commonly known by, nor does business as, the domain names or any term incorporated therein.
ii. Respondent has acquired the domains primarily for the purpose of passing off on Complainant’s well-known BEENVERIFIED mark and to operate a click-through fee program.
iii. Respondent’s <been--verified.com> and <been-verified.net> domain names link to <www.everify.com> and <www.backgroundchecks.com>.
iv. The parked status of the domain names does not constitute a bona fide offering of goods and services.
i. Respondent uses the domain names <been--verified.com> and <been-verified.net> to link to third-parties that are direct competitors of Complainant.
ii. Complainant alleges that its registration for the website <beenverified.com> in December 2006, as well as registration with the USPTO for the BEENVERIFIED mark both occurred well enough Respondent’s registration date of February 20, 2011. Respondent’s registration of the disputed domain names, incorporating Complainant’s exact mark strongly suggests that Respondent had actual notice of Complainant’s rights in the BEENVERIFIED mark.
iii. Respondent is also passively using the disputed domain names in bad faith.
1. Respondent registered the <been--verified.com> and <been-verified.net> domain names on February 20, 2011.
1. Respondent’s <been-verified.com> and <been-verified.net> domain names are confusingly similar to Complainant’s BEENVERIFIED mark.
2. Respondent does not have any rights or legitimate interests in the <been-verified.com> and <been-verified.net>.
3. Respondent registered or used the <been-verified.com> and <been-verified.net> domain names in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant, BEENVERIFIED, INC., argues that it has been using the BEENVERIFIED mark in commerce for more than 6 years in connection with background investigation and research services. Complainant contends that it is the owner of trademark registrations with the USPTO for the BEENVERIFIED mark (e.g., Reg. No. 3,810,610 registered June 29, 2010). See Exhibit 1. The Panel notes that although Respondent appears to reside in Panama, the Panel finds that Complainant is not required to register the mark in the country in which Respondent resides in order to satisfy Policy ¶ 4(a)(i). See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction). Therefore, the Panel concludes that Complainant’s registration of the BEENVERIFIED mark with the USPTO sufficiently demonstrates its rights in the mark pursuant to Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i).”).
Complainant alleges that the domains <been--verified.com> and <been-verified.net> are confusingly similar to Complainant’s BEENVERIFIED mark because they incorporate all elements of Complainant’s BEENVERIFIED mark and merely inject one or two hyphens between the words “BEEN” and “VERIFIED” followed by the generic top-level domains (“gTLD”) “.com” and “.net.” The Panel finds that the addition of hyphens and gTLDs to a mark is inconsequential to a Policy ¶ 4(a)(i) confusingly similar analysis. See Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (holding that attaching a gTLD is “unable to create a distinction capable of overcoming a finding of confusing similarity”). Therefore, the Panel finds that Respondent’s <been--verified.com> and <been-verified.net> domain names are confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant contends that Respondent is neither commonly known by, nor does business as, the domain names or any term incorporated therein. The Panel notes that the WHOIS information lists “Fundacion Private Whois / Domain Administrator” as the registrant of the domain name. See Exhibits 4 and 5. The Panel notes that Respondent does not provide additional information showing that it is known by the domain name. Consequently, the Panel determines that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name); see also IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name).
Complainant contends that Respondent’s <been--verified.com> and <been-verified.net> domain names previously linked to websites found at the <www.everify.com> and <www.backgroundchecks.com>. See Exhibit 9. The Panel notes that Respondent’s <been--verified.com> and <been-verified.net> domain names provide competing links titled “100% Safe, Secure, Private, And Anonymous,” “+10 Million Background Checks Run,” “Works on Mobile Browsers,” and others. See Exhibit 6 and 7. Complainant argues that Respondent receives a referral fee when Internet users click on the third-party links provided on Respondent’s websites. The Panel finds that Respondent’s use of the disputed domain names to provide competing links or competing services is not a Policy ¶ 4(c)(i) bona fide offering of goods and services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (holding that the respondent had not demonstrated a bona fide offering of goods or services or a legitimate noncommercial or fair use when “the website resolving from the disputed domain name displays links to travel products and services, which directly compete with Complainant’s business”); see also Alcon, Inc. v. ARanked, FA 1306493 (Nat. Arb. Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
Complainant further asserts that Respondent currently links the <been--verified.com> and <been-verified.net> domain names to third-party websites that contain derogatory remarks about Complainant’s services. Complainant alleges that Respondent’s current use of the disputed domains is to redirect Internet users to a third party complaint site is a “retaliation tactic” in response to Complainant’s letters asserting trademark rights to the BEENVERIFIED mark. The Panel determines that by using Complainant’s mark in the disputed domain names to redirect Internet traffic to a complaint site, Respondent fails to demonstrate a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Weekley Homes, L.P. v. Fix My House Or Else?, FA 96609 (Nat. Arb. Forum Apr. 18, 2001) (finding that establishment of a website containing criticism is not a legitimate use of the <davidweekleyhome.com> domain name because the disputed domain name is confusingly similar to the complainant's DAVID WEEKLEY HOMES mark).
Complainant claims that Respondent has acquired the domains in order to operate a click-through fee program. Complainant alleges that from February 2011 through present, the domain names <been--verified.com> and <been-verified.net> have been connected to a monetized parking page featuring links to web sites of competitors of Complainant relating to background investigation services. Complainant argues that the parked status does not constitute a bona fide offering of goods and services under Policy ¶ 4(c)(i). The Panel agrees that Respondent’s parking of the domain names does not constitute a Policy ¶ 4(c)(i) bona fide offering of goods and services. See Gold Medal Travel Grp. plc v. Kruzicevic, D2007-1902 (WIPO Mar. 12, 2008) (where the disputed domain name had been parked, the panel found the “the Registrant is responsible for the content of the material appearing on the webpage associated with the domain name in dispute.”).
Complainant argues that Respondent uses the domain names <been--verified.com> and <been-verified.net> to link to third-parties that are direct competitors of Complainant. Complainant asserts that the domain names link to competitor websites, <www.everify.com> and <www.backgroundchecks.com> that offer services in the field of background investigation and research in direct competition with Complainant. See Exhibits 9 and 10. Complainant claims that Respondent receives a referral fee when Internet users are redirected to the third-party websites via links provided on Respondent’s websites. Therefore, the Panel concludes that Respondent is using the disputed domain names to attract Internet users to its own websites for commercial gain, showing bad faith use and registration under Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).
Complainant alleges in its Policy ¶ 4(a)(ii) section that Respondent currently makes use of the <been--verified.com> and <been-verified.net> domain names to reroute Internet users to a third party website that contains offensive comments regarding Complainant’s business. The Panel determines that directing website visitors to a “complaint” page is evidence that Respondent registered and uses the disputed domain names in bad faith under Policy ¶ 4(a)(iii). See TM Acquisition Corp. v. S.E.A. Domains, FA 156800 (Nat. Arb. Forum June 12, 2003) (finding the respondent's use of the complainant's mark to redirect Internet users to a website dedicated to criticizing the complainant was evidence that the respondent’s domain names were registered and used in bad faith).
Complainants claims that Respondent is also passively using the disputed domain names in bad faith, as Respondent’s <been--verified.com> and <been-verified.net> domain names resolve to “parked pages.” Complainant contends that the landing pages for <been--verified.com> and <been-verified.net> are home screens that do not provide any services, but instead link to other commercial websites. See Exhibits 9 – 12. The Panel notes that by hosting hyperlinks at the resolving website, Respondent may be considered to be making use of the domain names. However, the Panel finds that Respondent’s failure to provide services amounts to Respondent’s failure to make an active use of the domain names under Policy ¶ 4(a)(iii). See Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) (“[I]t is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith.”).
Complainant alleges that its registration for the website <beenverified.com> in December 2006, as well as registration with the USPTO for the BEENVERIFIED mark both occurred well in advance of Respondent’s registration date of the disputed domain names in February 20, 2011. Complainant contends that Respondent’s registration of the disputed domain names, incorporating Complainant’s exact mark, strongly suggests that Respondent had actual notice of Complainant’s rights in the BEENVERIFIED mark. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, the Panel finds that Respondent had actual knowledge of Complainant's mark and rights and therefore determine that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <been--verified.com> and <been-verified.net> domain names be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: June 18, 2013
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